USPTO Updates AIA Rules in Response to User Feedback

USPTO Updates AIA Rules in Response to User Feedback

The United States Patent and Trademark Office’s (“USPTO”) Director, Michelle Lee, announced rulemakings aimed at improving post-grant American Invents Act (“AIA”) proceedings. Some of these improvements are effective immediately while others will roll out over the summer and beyond.

Lee is calling the first phase of these improvements the “Quick-Fix” package: simple changes effective immediately. The quick fixes mainly include increases to relevant page limits: Motions to Amend and subsequent documents received a 10 page allowance increase. This summer, the USPTO will issue more substantive changes to the Patent Trial and Appeal Board (“PTAB”) rules, likely including an easier claim amendment process, live testimony at oral hearing, discovery to establish real-party interest, and single-judge institution decisions.

The above changes were largely based on a 2014 request for public user input. The USPTO intends to continue this approach, demonstrating the work-in-progress nature of AIA proceedings. In particular, the USPTO responded to repeated criticism about the claim amendment process by increasing page limits and relaxing prior-art requirements, demonstrating that the USPTO is taking user feedback seriously.